The United States Patent and Trademark Office (USPTO or Office) is implementing the PCT Informed Examination Request (PIER) Pilot Program to assess the inventory and efficiency impacts of requiring an applicant to request examination in view of applicable Patent Cooperation Treaty (PCT) international phase work products. The USPTO will select certain national stage patent applications for the program. In an application selected for the program, the USPTO will issue a requirement for information referencing the applicable international phase work products and requiring the applicant to indicate whether the applicant opts to: proceed with examination (with the option to place the application in better condition for examination by filing a preliminary amendment), delay examination, or expressly abandon the application in view of the international phase work products. The applicant must respond to the requirement for information to avoid abandonment of the application. The USPTO expects that requiring applicants to indicate that examination is desired upon review of international phase work products present in the application file will contribute to efforts to reduce inventory and pendency.

The USPTO will select applications to participate in the PIER Pilot Program beginning April 9, 2026 until April 9, 2027. The USPTO may extend the program to select additional patent applications if it determines that more information is needed to evaluate the effectiveness of the program. The USPTO may, at its sole discretion, terminate the program for any reason, including factors such as workload and resources needed to administer the program, feedback from the public, and effectiveness of the program. If the program is terminated, the USPTO will notify the public on its website.

The PIER Pilot Program is designed to assess the inventory and efficiency impacts of requiring applicants to request examination in view of applicable Patent Cooperation Treaty (PCT) international phase work products. The USPTO will select certain applications for the program, as identified in Part I of this notice, from the inventory of unexamined national stage applications.

For selected applications that entered the national stage under 35 U.S.C. 371, the USPTO will issue a requirement for information pertaining to the international phase work products in the national stage file. International phase work products include the International Search Report (ISR) and any opinion expressed in a Written Opinion (WO) or International Preliminary Report on Patentability (IPRP). Thus, the requirement for information will reference applicable PCT international phase work products in the application file and require the applicant to indicate, based on review of international phase work products present in the application file, whether the applicant opts to proceed with the national phase of examination, delay the national phase of examination under the program, or expressly abandon the national stage application.

If the applicant desires to proceed with examination of an application selected for the program, the applicant must submit a timely and complete reply to the requirement for information using the reply form described in Part IV of this notice. The reply form references applicable PCT international work products and provides the applicant with the ability to indicate whether the applicant opts to: proceed with examination, delay examination for 12 months from the date of receipt of the request to delay examination, or expressly abandon the application. A delay in examination under the program provides the applicant with additional time to consider the value and commercial potential of their invention at no additional cost. If the applicant opts to proceed with examination, with or without delay, the applicant may additionally opt to place the application in better condition for examination by filing a preliminary amendment. Alternatively, if the applicant opts not to proceed with examination, the applicant may file a request to expressly abandon the application. A complete reply to a requirement for information issued under the program requesting examination will result in the application being placed on an examiner’s docket.

Part I. Pilot Program Eligibility

The USPTO will select certain unexamined national stage applications for the PIER Pilot Program intermittently until the close of the program. To be selected for the program, the application must be an international application that entered the national stage under 35 U.S.C. 371. Applications filed under 35 U.S.C. 111(a), including plant applications, design applications, and reissue applications, will not be selected.

Applications entered into the program are at the sole discretion of the USPTO. The USPTO will not grant any petition to participate, abstain, or be removed from the program.

Part II. International Phase Work Products for Applications Entering the National Stage Under 35 U.S.C. 371

For selected applications that have entered the national stage, the USPTO will issue a requirement for information as discussed in Part III of this notice. Typically, a national stage application file includes the International Search Report (ISR) and the Written Opinion prepared by the International Searching Authority (WO/ISA). The ISR lists the prior art with relevancy indicators (in the form of citation categories as provided for in WIPO Standard ST. 14), and the WO/ISA provides a preliminary, non-binding assessment of patentability in view of the ISR references. See sections 1893.03(e) and 1845 of the Manual of Patent Examining Procedure (MPEP) (9th Edition, Rev. 01.2024, November 2024). The national stage file may also contain any Supplemental International Search (SIS) requested by the applicant. See MPEP 1856. Further, if the applicant timely filed a demand for preliminary examination under Chapter II of the PCT, the International Preliminary Report on Patentability (IPRP) (Chapter II of the PCT) will also be included in the national stage file. See MPEP 1893.03(e).

Part III. Pilot Program Requirement for Information Under 37 CFR 1.105

Only national stage applications that have completed pre-examination processing will be selected for the program. In selected applications, the USPTO will issue a requirement for information under 37 CFR 1.105 that will be placed in the file. A requirement for information issued under the program is an Office action under 35 U.S.C. 132, but not a first action on the merits. The requirement for information will set a two-month period for reply, which the applicant may extend for up to six months in accordance with 37 CFR 1.136(a). See MPEP 704.13.

A requirement for information under the program will require the applicant to indicate whether the applicant opts to proceed with examination, delay examination for 12 months from the date of receipt of the request to delay examination, or expressly abandon the application in accordance with 37 CFR 1.138. To avoid abandonment of an application selected for the program, the applicant must submit a complete and timely reply using the USPTO form described in Part IV of this notice. A complete reply to a requirement for information requesting to proceed with examination will result in the application being placed on an examiner’s docket. A complete reply requesting delay of examination will result in the application being placed on an examiner’s docket after the expiration of the 12-month delay period. Thus, an applicant who desires to prosecute the application will have greater control as to when their application will be examined.

A delay of examination under the PIER Pilot Program is distinct from a suspension or deferral request under 37 CFR 1.103. The option to delay examination under the program affords the applicant a non-terminable 12-month period after the date of receipt of the request to delay examination under the program to assess the viability of the invention, without the processing fee required for a suspension or deferral of examination. The Office will treat the request for the 12-month delay of examination as a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application under 35 U.S.C. 154(b)(2)(C)(i) and (iii) and 37 CFR 1.704(c). The delay period begins on the date of the receipt of the request to delay examination and ends on the one year anniversary date of the request. In addition, the mailing of the requirement under 37 CFR 1.105 will be considered the date that the Office met the requirement of 35 U.S.C. 154(b)(1)(A)(i) and 37 CFR 1.702(a)(1). If the applicant desires to avoid further prosecution costs, the applicant may request to expressly abandon the application under 37 CFR 1.138(a) in reply to the requirement for information. The applicant may also file a petition under 37 CFR 1.138(c) for express abandonment to avoid publication of the application. However, such a petition must be submitted as a separate request (e.g., form PTO/AIA/24A) accompanying the reply to the requirement for information. A petition for express abandonment under 37 CFR 1.138(c) generally will not be effective to stop publication of the application unless it is recognized by the appropriate Office personnel more than four weeks prior to the projected publication date. Where an applicant files a request to expressly abandon the application under 37 CFR 1.138(a) in reply to the requirement for information, such a request will still be granted (if properly signed) even if the petition under 37 CFR 1.138(c) cannot be granted. Because a requirement for information is an action under 35 U.S.C. 132, express abandonment under 37 CFR 1.138(d) to obtain a refund of the search and excess claims fees is unavailable. A registered practitioner acting in a representative capacity is not authorized to sign an express abandonment except when filing a continuing application. See37 CFR 1.138(b).

Part IV. Replying to a Pilot Program Requirement for Information

An applicant must use form PTO/SB/478 to reply to a requirement for information under the program. If filing the PTO/SB/478 electronically in Patent Center (at https://patentcenter.uspto.gov), the applicant must use the document description provided on the form to ensure that the appropriate area of the USPTO is notified of the reply. Under 5 CFR 1320.3(h), Form PTO/SB/478 does not collect “information” within the meaning of the Paperwork Reduction Act of 1995. Use of the form will enable the USPTO to quickly identify and timely process the applicant’s reply. The form will be available at: www.uspto.gov/​PatentForms.

Form PTO/SB/478 includes a reference to applicable PCT international work products. The form also includes a series of selectable checkboxes for the applicant to indicate whether a request is being made to proceed with examination, delay examination, or expressly abandon the application. If the applicant opts to proceed with examination (including after the 12-month delay), the applicant may additionally file a preliminary amendment in compliance with 37 CFR 1.115. Alternatively, if the applicant selects the option to expressly abandon the application, it is recommended that, in addition to selecting the express abandonment checkbox, the applicant also include a separate request for express abandonment under 37 CFR 1.138, ( e.g., form PTO/AIA/24) to facilitate processing. As discussed above, a registered practitioner acting in a representative capacity is not authorized to sign an express abandonment except when filing a continuing application. See37 CFR 1.138(b). Therefore, the only time the USPTO will accept form PTO/SB/478 with the express abandonment box selected and signed by an individual who is acting in a representative capacity is when a separate letter of express abandonment is also submitted indicating that the application is expressly abandoned in favor of a continuing application ( e.g., form PTO/AIA/24). In all other instances, when the express abandonment box is selected, form PTO/SB/478 must be signed by an individual authorized under 37 CFR 1.33(b)(1) or (b)(3), that is by the patent practitioner of record, or by the applicant who is not a juristic entity. See MPEP 711.01 for more information on express abandonment.

Additionally, as discussed above, the applicant may also file a petition under 37 CFR 1.138(c) for express abandonment to avoid publication of the application. However, such a petition must be submitted as a separate request (e.g., form PTO/AIA/24A). See Part V of this notice for information on treatment of an incomplete reply to a requirement for information under the program.

Prior to selecting the express abandonment checkbox (Item 2c) on the PTO/SB/478, it is imperative that the attorney or agent of record exercise every precaution in ascertaining that the abandonment of the application is in accordance with the desires and best interests of the applicant. See MPEP 711.01. Note that where the applicant deliberately permits an application to become abandoned, the abandonment of such application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as “unintentional” within the meaning of 37 CFR 1.137. See MPEP 711.03(c), subsection II.C.

Part V. Internal Processing of an Applicant’s Reply to a Pilot Program Requirement for Information

Failure to timely submit a complete, properly signed PTO/SB/478 will result in abandonment of the application. See MPEP 711.02. USPTO personnel will review PTO/SB/478 and any accompanying documents ( e.g., preliminary amendment, petition under 37 CFR 1.138(c)).

In order for an applicant’s reply to be considered complete, the PTO/SB/478 must be properly signed and only one of the provided checkboxes must be selected. Note that a reply under 37 CFR 1.105(a)(3) that states that the information required to be submitted is unknown to or is not readily available would not be considered a proper reply because, if the applicant has not determined whether they would like to move forward with examination, the applicant has the option to delay examination for a period of 12 months.

An incomplete or improperly signed PTO/SB/478 will be handled in substantially the same manner as an amendment not fully responsive to a non-final Office action. See MPEP 704.12(c) and MPEP 714.03. If an applicant’s reply is a bona fide attempt to advance action on the application, the applicant will be notified of the deficiency and may be given a shortened statutory period of two months to provide a fully responsive reply. Extensions of this time period set by the notice of nonresponsive reply will be permitted under 37 CFR 1.136(a), but in no way can any extension carry the date for reply to this notice beyond the maximum period of six months set by statute. See35 U.S.C. 133. However, any further nonresponsive reply typically will not be treated as bona fide and, therefore, the time period set in the prior notice will continue to run.

If the applicant has submitted a complete reply opting to proceed with examination, the application will be placed on an examiner’s docket. Alternatively, if an applicant’s complete reply includes a request for delay of examination, the USPTO will notify the applicant that the request to delay examination under the program has been approved. Once a request to delay examination under the program has been approved, the applicant will not be permitted to terminate the delay period early. The application will be docketed for examination after the expiration of 12 months from the date of receipt of the request to delay examination under the program. When examining an application that entered the national stage under 35 U.S.C. 371, the examiner will consider all U.S patent applications, U.S. patent application publications, and U.S. pending applications cited in the ISR and stored in the USPTO’s Image File Wrapper (IFW) system. See MPEP 609.03. Other cited documents will be considered by the examiner if form PCT/DO/E.O./903 indicates that the ISR and the copies of such documents are present in the national stage file. See id. The examiner is not required to list references cited in the ISR on a PTO-892 and there is no requirement for the applicant to separately list the references. See id. References cited in the PCT international phase will only be printed on a resulting patent if the applicant cites the references on an IDS in compliance with 37 CFR 1.97 and 1.98. See id. and MPEP 609.06.

Part VI. Evaluation of the Pilot Program

The pilot program is designed to assess the inventory and efficiency impacts of requesting examination in view of applicable PCT international phase work products. The USPTO plans to evaluate how requiring an applicant who desires to prosecute an application to request examination in view of international phase work products in the application file impacts an applicant’s decision making and application inventory, as well as the quality and efficiency of examination. During or after the pilot program, the USPTO anticipates providing an avenue for participants to provide feedback regarding the pilot program. As applicable, the USPTO will follow the GAO’s Leading Practices for Effective Pilot Design, including: (1) establishing clear objectives; (2) collecting relevant data; (3) evaluating outcomes; (4) considering scalability; and (5) ensuring stakeholder communication. See GAO Data Act: Section 5 Pilot Design Issues Need to Be Addressed to Meet Goal of Reducing Recipient Reporting Burden, GAO-16-438 (Washington, DC; April 19, 2016).

Director of the USPTO John A. Squires signed the first two patents of his tenure signaling the USPTO’s commitment to a “strong, robust, expansive, and resilient intellectual property system.”
In the weeks that followed, the USPTO issued the In re Desjardins Appeals Review Panel decision, later designated precedential, clarifying that improvements to the functioning of machine learning models can constitute practical applications under the governing subject matter eligibility framework. The decision reaffirmed that eligibility must be assessed carefully and consistently, with proper consideration of technological improvements reflected in the claims and specification.
Today, the USPTO is issuing two memoranda providing additional clarification regarding the use of Subject Matter Eligibility Declarations (SMEDs) under 37 C.F.R. § 1.132. These memoranda respond to questions raised by applicants, practitioners, and examiners about how evidentiary submissions may be used to address subject matter eligibility rejections, and they fulfill Director Squires’s commitment to provide guidance and assistance in this area.
The first memorandum, directed to the Examining Corps, explains that SMEDs are a voluntary option under existing Rule 132 practice. Applicants may submit a declaration to provide factual evidence relevant to the eligibility inquiry, such as evidence of technological improvement, the state of the art at the time of filing, or information demonstrating how a judicial exception is integrated into a practical application. The memorandum clarifies that, when a SMED is properly submitted, examiners must consider it as part of the evidentiary record and evaluate it using the preponderance-of-the-evidence standard. The memorandum includes several examples illustrating how such evidence may inform eligibility determinations consistent with the MPEP and applicable precedent.
The second memorandum, directed to applicants and practitioners, outlines best practices for preparing and submitting SMEDs. It explains that eligibility-related testimony is most effective when presented in a separate declaration focused solely on subject matter eligibility. Combining testimony on eligibility with testimony addressing other statutory requirements may complicate the record and hinder an examiner’s ability to evaluate the evidence. The memorandum notes that SMEDs should provide objective evidence tied to the claimed invention and should not be used to supplement the original disclosure.
Together, these memoranda clarify how applicants may provide factual evidence relevant to the eligibility analysis and how examiners should evaluate such submissions under longstanding practice. This guidance is intended to improve clarity, strengthen the examination record, and support consistent application of subject matter eligibility principles across technologies.
The memoranda take effect immediately.

The first memorandum can be found at:

https:/lnkd.in/emfazgJ2

The second memorandum can be found at :

https://lnkd.in/eMVfm-rW

Please contact me for any questions.

Starting on January 19, 2025 the USPTO will increase patent fees for filing and prosecution. The Notice is available in the USPTO web page (Fee-Setting web page) and in the Federal Register Notice. A detailed list of the increase fees is in the following spreadsheet.

Please contact me for additional information.

The United States Patent and Trademark Office (USPTO) recently proposed a new fee structure for fiscal year 2025, which includes significant increases in various patent fees.

One proposed change regards the introduction of new fees for continuation applications. If an applicant files a continuation application more than five years after the earliest claimed priority or benefit date, they will be subject to a surcharge $2,200 fee. This fee increases to $3,500 if the continuation application is filed more than eight years after the earliest benefit date. The USPTO does justify their approach on funding reasons — noting that continuations have a shorter patent-term and so the USPTO is unlikely to recoup the maintenance fee on the back end

Another change is the substantial increase in fees for Request for Continued Examination (RCE) filings. The USPTO proposes a 25-80% increase for second and third RCEs. At the same time, the USPTO has proposed a new fee of $500 for participating in the After Final Consideration Pilot Program 2.0 (AFCP 2.0). This program allows applicants to file a response after a final rejection, along with a request for consideration under the pilot program. 

The proposed fee structure also includes a 100% increase in fees for claims in excess of 20 and a fee increase for filing a Terminal Disclaimer after a final action or a notice of allowance moves that cost up to $800.

Additional fees:

1. Information Disclosure Statement (IDS) fees: The USPTO has proposed a new tiered fee structure for IDSs based on the number of references cited. This change aims to recover the costs associated with reviewing large IDSs and encourage applicants to file only the relevant documents.  The fee structure is $200 for >50 references; $500 for >100 references and $800 for >200 references. I’m sure we’ll be seeing an increase AI tools facilitate the pairing down of submissions to those that appear to have relevance without being cumulative.
2. PTAB trial fees: The USPTO has proposed increasing fees for inter partes review (IPR) and post-grant review (PGR) proceedings by 25%. These increases are account for the costs of conducting these proceedings.
3. Small and Micro entity status: Almost all of the fees include discounts for applications associated with small and micro entity status.

The proposed fee changes are expected to take effect in fiscal year 2025, which begins on October 1, 2024. However, the exact implementation date may vary depending on the feedback received during the public comment period and the time required for the USPTO to review and address the comments.

Written comments must be received on or before June 3, 2024, to ensure consideration. Comments must be submitted through the Federal eRulemaking Portal at https://www.regulations.gov/docket/PTO-P-2022-0033.

As part of the continued move toward total electronic processing, the USPTO will issue certificates of correction for patents electronically beginning January 30, 2024. The electronic certificate of correction will be the official certificate of correction issued under seal as provided for by the applicable statute. The USPTO will make electronic certificates of correction available in both the public and private views of Patent Center on the certificate’s date of issuance. Therefore, the public and the patent owner will be able to immediately view the official electronic certificate of correction. The USPTO will not mail a paper copy of the certificate of correction. Patents issued on or after April 18, 2023, are issued electronically, whereas patents issued before April 18, 2023, were issued on paper. All certificates of correction for patents issued on or after January 30, 2024, will be issued electronically, regardless of whether the patent was issued on paper or electronically. The other practices incident to issuance of a certificate of correction for notifying the public and the patent owner, as detailed in the Background section above, will not change. A notice will be sent to the patent owner to indicate that an electronic certificate of correction has issued. If the patent is associated with a Customer Number enrolled in the Patent Center Electronic Office (e-Office) Action program, the USPTO will send an email notification of the certificate of correction to the designated email addresses. Otherwise, the USPTO will mail a notification that the certificate of correction has issued to the correspondence address of record

Starting on January 17, 2024, non-provisional utility patent applications, with specification, claims and abstract in non DOCX filing formats, i.e., in PDF, will incur a surcharge of $400. An option for applicants to provide a backup PDF, or auxiliary PDF, version of their application with their DOCX version is available. There are no fees associated with providing the backup PDF. However, keep in mind the following issues:

The DOCX document that you upload (“D1”) will not control, because during the filing process the USPTO creates a different DOCX filed (“D2”) which will actually control. Therefore, if D1 and D2 are different, your patent will have errors which could no longer be corrected by requesting a certificate of correction, but can be corrected only by filing petition (which might or might not be granted).

The auxiliary PDF also will not control, therefore, filing it will not assure you that your patent will be free from USPTO errors.

What is the best way to proceed?

In my opinion (and in the opinion of many other practitioners) the best way to proceed is to continue to file all the applications in PDF format, paying the surcharge of $400. It would be much more expensive to correct a patent with error in chemical or mathematical formulas.

Of course this new USPTO surcharge is not applicable to National Stage Applications, which can still safely filed in PDF format.

Please contact me if you have any questions or if you wish to discuss this matter in more details.

The United States Patent and Trademark Office (USPTO) published a final rule in the Federal Register on August 3, 2020, that includes a fee for patent applications that are not filed in the DOCX format. The fee only applies to non-provisional utility applications and not to design, plant, or provisional applications.

The effective date of this new fee was most recently delayed in a final rule published in the Federal Register on December 29, 2022 and was scheduled to become effective on April 3, 2023. Through a new final rule, the USPTO is delaying the effective date of this fee until June 30, 2023.

The USPTO is committed to ensuring a successful and smooth transition to the DOCX format for patent applicants. You can find the full text of the final rule in the Federal Register and on the USPTO’s Patent Related Notices webpage

On April 18, the United States Patent and Trademark Office (USPTO) will begin issuing electronic patent grants (eGrants) rather than paper patents.

Part of this changeover involves modifying the Issue Fee Transmittal form (PTOL-85B) and its web-based version. The form no longer allows for advance orders of patent copies, because patents may be printed directly from Patent Center when issued. Advance orders for copies of patents issuing on or after April 18 will not be processed.

Additionally, since eGrants may be issued shortly after paying the issue fee and sooner than applicants are accustomed to, the PTOL-85B form includes a reminder to file any continuing application prior to issue-fee payment so as not to jeopardize copendency. The newly modified form can be found here

To further advance its information technology strategy of achieving complete, beginning-to-end electronic processing of patent-related submissions, the United States Patent and Trademark Office (USPTO) has issued a final rule to require that patent term extension (PTE) applications, interim PTE applications, and any PTE-related submissions to the USPTO be submitted electronically via the USPTO patent electronic filing system. This change reduces the administrative burden on PTE applicants and improves administrative efficiency by facilitating electronic file management, optimizing workflow processes, and reducing processing errors. The full text of the final rule is available at the Federal Register and on the USPTO’s Patent Related Notices webpage.

Beginning April 18, 2023, the U.S. Patent and Trademark Office (USPTO) is shifting towards issuing paper waste-reducing electronic patent grants (eGrants) to patent recipients—a new process that delivers the official copy of patent grants in an electronic format. A bound paper version as a ceremonial copy throughout a limited transition period will be provided, and then for a nominal fee thereafter. 

“By issuing eGrants, the USPTO is making considerable strides toward more environmentally-conscious operations at the USPTO,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “Providing 21st century service to our stakeholders means shifting our processes to reflect 21st century policies. The eGrant process not only minimizes paper waste, but it also benefits stakeholders by reducing pendency and streamlining the process. It’s a win-win for the agency and for our customers.”

The eGrant process significantly decreases USPTO’s printing and mailing needs, potentially reducing patent pendency, and saving the agency nearly $2 million in annual printing and mailing costs. Further, under the new process, patent recipients will receive their electronic patent grant in PDF format on the day of issuance.

During the transition period, patent awardees will have access to the eGrant official copy in Patent Center and receive the bound paper version as a ceremonial copy. Patent recipients may still request USPTO certified copies and presentation copies from the USPTO’s certified copy center for an additional fee. Unlimited free copies of eGrants can also be printed from USPTO’s online Patent Center. The agency already provides electronic trademark registration certificates to trademark owners.

For more information, read the full Federal Register Noticeor visit the eGrant webpage on the USPTO website, where you can find our eGrant FAQ document and additional information.